`571-272-7822
`
`Paper 8
`Entered: May 21, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`UNIFIED PATENTS INC.,
`Petitioner,
`v.
`ACCELERATED MEMORY TECH, LLC,
`Patent Owner.
`
`IPR2020-00191
`Patent 6,513,062 B1
`
`
`
`
`
`
`
`
`
`Before JENNIFER S. BISK, LYNNE H. BROWNE, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`BROWNE, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`Due to Disclaimer of All Challenged Claims
`35 U.S.C. § 314, 37 C.F.R. § 42.107(e)
`
`I.
`INTRODUCTION
`A. Background and Summary
`On December 3, 2019, Unified Patents Inc. (“Petitioner”) filed a
`Petition requesting inter partes review of claims 1–7 of U.S. Patent No.
`6,513,062 B1 (“the ’062 patent”) (Ex. 1001). Paper 2 (“Pet.”). On February
`6, 2020, Accelerated Memory Tech, LLC (“Patent Owner”) filed a Request
`
`
`
`
`
`IPR2020-00191
`Patent 6,513,062 B1
`for Adverse Judgment, explaining that a disclaimer disclaiming all the
`challenged claims was filed, and that there are no remaining claims at issue
`in this proceeding. Paper 7 (“Req.”); see also Ex. 2001 (Disclaimer).
`Institution of an inter partes review is authorized by statute when “the
`information presented in the petition filed under section 311 and any
`response filed under section 313 shows that there is a reasonable likelihood
`that the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.” 35 U.S.C. § 314(a).
`For the reasons set forth below, we decline to institute an inter partes
`review of any claims challenged in the ʼ062 patent.
`B. Real Parties in Interest
`Petitioner identifies itself as the sole real party-in-interest. Pet. 1.
`Patent Owner identifies itself as the real party-in-interest. Paper 6, 2.
`C. Related Matters
`The parties identify Accelerated Memory Tech, LLC v. Hulu, LLC,
`Civil Action 1-19-cv-01158 (D. Del.), transferred to Accelerated Memory
`Tech, LLC v. Hulu, LLC, 2-19-cv-08968 (C.D. Cal.), Accelerated Memory
`Tech, LLC v. Kemp Technologies, Inc., Civil Action 1-19-cv-00939 (D.
`Del.), Accelerated Memory Tech, LLC v. F5 Networks, Inc., Civil Action 2-
`19-cv-00183 (W.D. Wa.), Accelerated Memory Tech, LLC v. Barracuda
`Networks, Inc., Civil Action 2-18-cv-00175 (N.D. Ga.), and Accelerated
`Memory Tech, LLC v. Citrix Systems, Inc., Civil Action 2-18-cv-00052
`(N.D. Ga.) as related matters. Pet. 1; Paper 6, 2.
`II. ANALYSIS
`A “patent owner may file a statutory disclaimer under 35 U.S.C.
`[§] 253(a) in compliance with §1.321(a) of this chapter, disclaiming one or
`
`2
`
`
`
`IPR2020-00191
`Patent 6,513,062 B1
`more claims in the patent. No inter partes review will be instituted based on
`disclaimed claims.” 37 C.F.R. § 42.107(e) (2019).
`A disclaimer under 35 U.S.C. § 253(a) is “considered as part of the
`original patent” as of the date on which it is “recorded” in the Office.
`35 U.S.C. § 253(a). For a disclaimer to be “recorded” in the Office, the
`document filed by the patent owner must:
`(1) Be signed by the patentee, or an attorney or agent of record;
`(2) Identify the patent and complete claim or claims, or term being
`disclaimed. A disclaimer which is not a disclaimer of a complete claim or
`claims, or term will be refused recordation;
`(3) State the present extent of patentee’s ownership interest in the
`patent; and
`(4) Be accompanied by the fee set forth in 37 C.F.R. § 1.20(d).
`37 C.F.R. § 1.321(a); see also Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d
`1379, 1382 (Fed. Cir. 1998) (holding that a § 253 disclaimer is “recorded”
`on the date that the Office receives a disclaimer meeting the requirements of
`37 C.F.R. § 1.321(a), and that no further action is required in the Office for a
`disclaimer to be “recorded”).
`Here, Patent Owner filed a statutory disclaimer of claims 1–8 of the
`’062 patent. Ex. 2001. Based on our review of Exhibit 2001 and Office
`public records, we conclude that a disclaimer of claims 1–8 of the ’062
`patent under 35 U.S.C. § 253(a) has been recorded in the Office as of
`January 29, 2020. Because all challenged claims 1–7 have been disclaimed
`under 35 U.S.C. § 253(a), in compliance with 37 C.F.R. § 1.321(a), no inter
`partes review is instituted. 37 C.F.R. § 42.107(e); General Electric Co. v.
`United Techs. Corp., IPR2017-00491, Paper 9 (PTAB July 6, 2017)
`
`3
`
`
`
`IPR2020-00191
`Patent 6,513,062 B1
`(precedential) (declining to institute inter partes review when all challenged
`claims were disclaimed under 35 U.S.C. § 253(a)).
`III. ORDER
`In consideration of the foregoing, it is hereby ORDERED that the
`Petition is denied and no inter partes review is instituted.
`
`4
`
`
`
`IPR2020-00191
`Patent 6,513,062 B1
`FOR PETITIONER:
`
`Raghav Bajaj
`David L. McCombs
`HAYNES AND BOONE, LLP
`raghav.bajaj.ipr@haynesboone.com
`david.mccombs.ipr@haynesboone.com
`
`Ashraf Fawzy
`UNIFIED PATENTS INC.
`afawzy@unifiedpatents.com
`
`
`FOR PATENT OWNER:
`
`Jerry C. Liu
`Gregory Ourada
`HILL, KERTSCHER & WHARTON, LLP
`jl@hkw-law.com
`go@hkw-law.com
`
`
`5
`
`
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